Case: 1:10-cv-00715 Document #: 528 Filed: 02/20/14 Page 1 of 8 PageID #:23133
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`Case No. 10 C 715
`(Consolidated with:
`10 C 716, 10 C 718,
`10 C 720, 10 C 721,
`10 C 726, 10 C 882,
`10 C 883, 10 C 884,
`10 C 885, 10 C 929,
`10 C 931)
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`Judge Virginia M. Kendall
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`))))))))))))
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`TRADING TECHNOLOGIES
`INTERNATIONAL, INC.
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`Plaintiff,
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`v.
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`BCG PARTNERS, INC.
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`Defendant.
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`POSITION STATEMENT OF THE TD AMERITRADE DEFENDANTS
`ON THE FEDERAL CIRCUIT'S DECISION IN OEC
`AND HOW THIS CASE SHOULD PROCEED
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`This Court requested in its February 6, 2014 minute order that the parties file independent
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`position papers addressing the effect of the Federal Circuit’s decision in Trading Technologies
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`International, Inc. v. Open E Cry, LLC, 728 F.3d 1309 (2013) (“OEC”) on Defendants’ Renewed
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`Motion For Summary Judgment That The ’411 Patent Is Invalid Under 35 U.S.C. §112 ¶1 For
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`Lack Of Written Description (Dkt. #515-518) and whether a claim construction hearing is
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`necessary to resolve Defendants’ Renewed Motion. Defendants thinkorswim Group Inc., TD
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`Ameritrade, Inc., and TD Ameritrade Holding Corp. (collectively “TD Ameritrade”)1
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`respectfully submit that this Court should set a briefing schedule and decide Defendants’
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`Renewed Motion before proceeding with the remainder of the case, and that no claim
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`construction is necessary to decide that motion.
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`1 Wilson Sonsini Goodrich & Rosati also represents defendants IBG LLC and Interactive
`Brokers LLC (collectively “IBG”) and has submitted a separate position statement on behalf of
`IBG.
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`TRADING TECH EXHIBIT 2022
`IBG ET AL. v. TRADING TECH
`CBM2015-00179
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`

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`Case: 1:10-cv-00715 Document #: 528 Filed: 02/20/14 Page 2 of 8 PageID #:23134
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`In OEC, the Federal Circuit remanded for this Court to determine “in the first instance
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`based on its own review of the disclosures” whether the claims of U.S. Patent No. 7,676,411 (the
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`“’411 patent”) fail to satisfy the written description requirement. 728 F.3d at 1320. The Federal
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`Circuit expressly stated “no opinion” on this issue, leaving “that determination for the district
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`court to make.” Id. The Federal Circuit determined only that its prior determination in Trading
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`Technologies International, Inc. v. eSpeed, Inc., 595 F.3d 1340 (Fed. Cir. 2010) (“eSpeed”) “did
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`not settle the issue.” Id. Accordingly, TD Ameritrade believes that this Court should now make
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`that determination on the merits.
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`In addition, no separate claim construction hearing is necessary to resolve Defendants’
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`Renewed Motion for two reasons: first, there is no dispute as to the construction of “price axis”
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`– the claim term relevant to Defendants’ Renewed Motion; and second, even if any limited claim
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`construction was necessary, that can be done in the context of summary judgment proceedings.
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`Moreover, deciding Defendants’ Renewed Motion now will simplify the issues in this case
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`because an invalidity finding on the ’411 patent also determines invalidity on two additional
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`patents – U.S. Patent Nos. 7,904,374 (the “’374 patent”) and 7,693,768 (the “’768 patent”) – and
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`it may encourage settlement. Accordingly, TD Ameritrade believes that this Court should
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`proceed on Defendants’ Renewed Motion first.
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`I.
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`This Court Should Proceed With Defendants’ Renewed Motion
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`All but one defendant previously filed a motion for summary judgment asserting that the
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`’411 patent was invalid for lack of written description under 35 U.S.C. §112 ¶1. Dkt. # 379.
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`Defendants raised two independent bases for finding the ’411 patent invalid for lack of written
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`description: (1) because of the Federal Circuit’s determinations in eSpeed regarding what the
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`patent specification did or did not disclose; and (2) because the specification did not disclose that
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`Case: 1:10-cv-00715 Document #: 528 Filed: 02/20/14 Page 3 of 8 PageID #:23135
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`the inventors were in possession of, or had invented, an invention with a price axis that moves
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`other than through manual recentering (e.g., price axes that move automatically). Id.
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`Trading Technologies International, Inc. (“TT”) filed an opposition to this motion
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`arguing that eSpeed was not dispositive of the written description issue, and filed a cross-motion
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`arguing that the ’411 patent has sufficient written description. Dkt. #395. In that briefing, TT
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`admitted that the claims of the ’411 patent are not limited to a display with price axes that are
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`“static” and move only through manual recentering. Id.
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`This Court determined that the ’411 patent was invalid based on eSpeed and, therefore,
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`found that it did not need to address the second independent ground. TT thereafter agreed that
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`this Court’s determination on the ’411 patent also determined the invalidity of the ’374 and ’768
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`patents (Dkt. #458 at 2) and then appealed this Court’s ruling to the Federal Circuit.
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`On appeal, TT again conceded that the claims of the ’411 patent are not limited to a
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`display with price axes that are “static” and move only through manual recentering. Dkt. #518,
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`at Ex. 10, pp. 19, 21-22. TT also argued again that eSpeed was not dispositive of the written
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`description issue. While defendants opposed TT’s arguments regarding eSpeed in their appeal
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`briefing, defendants also asked that the Federal Circuit affirm this Court’s ruling on an
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`alternative ground that had been raised below – that, independent of eSpeed, the claims of the
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`’411 patent fail to satisfy the written description requirement. The Federal Circuit, however,
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`declined to reach this independent ground.
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`The Federal Circuit held “only that eSpeed did not settle” the written description issue.
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`728 F.3d at 1320. The Federal Circuit expressly stated that it expressed “no opinion as to
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`whether or not the claims of the ’411, ’768, and ’374 patents” “satisfy the written description
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`requirement.” Id. Instead, the Federal Circuit remanded to this Court “for further proceedings
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`Case: 1:10-cv-00715 Document #: 528 Filed: 02/20/14 Page 4 of 8 PageID #:23136
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`on the merits under §112” leaving “that determination for the district court to make in the first
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`instance based on its own review of the disclosures underlying those particular claims.” Id. That
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`is exactly what Defendants’ Renewed Motion asks this Court to do now.
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`In issuing its ruling, the Federal Circuit reconfirmed that the ’132 patent, which shares
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`the identical written description of the ’411 patent, “explains that the values in the price column,
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`‘are static; that is, they do not normally change positions unless a recentering command is
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`received,’” and the recentering command described is a manual “‘one click’ centering feature.”
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`Id. at 1314. The Federal Circuit also reiterated that the term “static” requires a price display that
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`does “not move in response to changes in the inside market, expressly excluding displays that re-
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`center automatically when the inside market shifts” and that moves only in response to a
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`“manual re-centering command.” Id. at 1314-1315. Further, the Federal Circuit noted that TT
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`intentionally removed the term “static” from the claims that led to the ’411 patent during
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`prosecution such that the issued ’411 patent claims are “without limitation to a ‘static’ price
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`column display.” Id. at 1315. Given this, the Federal Circuit found that “the question here is
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`whether the patents’ common disclosure provides adequate support for claims not limited to
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`displays with ‘static’ price axes, i.e., claims broad enough to encompass some form of automatic
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`recentering” but that the eSpeed decision did not answer that question. Id. at 1319. Accordingly,
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`this Court need only to resolve whether claims that are not limited to a display of “static” price
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`axes are supported by a disclosure that describes only a “static” price column – one that does not
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`change positions unless a manual recentering command is received. See Dkt. #518. Because
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`that question was expressly left for this Court to decide and it is the very question raised by
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`Defendants’ Renewed Motion, TD Ameritrade respectfully requests that this Court proceed to
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`Case: 1:10-cv-00715 Document #: 528 Filed: 02/20/14 Page 5 of 8 PageID #:23137
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`decide that question now by hearing Defendants’ Renewed Motion and setting a briefing
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`schedule for it.
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`II.
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`A Claim Construction Hearing For Defendants’ Renewed Motion Is Not Needed
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`There is no need for this Court to first conduct a claim construction hearing prior to
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`reaching the merits of Defendants’ Renewed Motion. First, as the Federal Circuit noted and TT
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`has repeatedly conceded, the claims of the ’411 patent are not limited to a “static” price column
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`display as that term was construed in eSpeed. In other words, there is no dispute that the claims
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`do not exclude a price axis that moves automatically. Second, there is no dispute as to the
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`meaning of “price axis.” TT has stated that a “price axis” is a “line of prices.” Dkt. #395 at 23;
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`Dkt. #518-1 at 10. Third, in opposing defendants’ prior summary judgment motion and in
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`bringing its own cross-motion, TT never asserted that there were any claim construction disputes
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`relevant to the written description of the ’411 patent. See Dkt. #395. Accordingly, to resolve
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`Defendants’ Renewed Motion, there are no claim terms that are in controversy and therefore
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`there is nothing for this Court to construe. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
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`F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and
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`only to the extent necessary to resolve the controversy”).
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`Even if any claim construction were necessary to resolve Defendants’ Renewed Motion,
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`it can be done in conjunction with proceedings on Defendants’ Renewed Motion. Because claim
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`construction is a question of law to be decided by a court, it may “be done in the context of
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`dispositive motions such as those seeking judgment as a matter of law.” Markman v. Westview
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`Instruments, Inc., 52 F.3d 967, 981 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996); see, e.g.,
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`MagSil Corp. v. Hitachi Global Storage Techs., Inc., 687 F.3d 1377, 1381 (Fed. Cir. 2012)
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`(construing claims as part of an invalidity summary judgment motion).
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`Case: 1:10-cv-00715 Document #: 528 Filed: 02/20/14 Page 6 of 8 PageID #:23138
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`III.
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`Case Proceedings – Address Defendants’ Renewed Motion First
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`TD Ameritrade respectfully requests that the Defendants’ Renewed Motion be resolved
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`by this Court first. As TT has previously conceded, a finding of invalidity on the ’411 patent
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`will also be determinative of the ’768 and ’374 patents. Thus, this Court’s determination on the
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`merits may likely dispose of three asserted patents, thereby narrowing the issues. Moreover,
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`resolution of this written description issue may make potential settlement discussions more
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`fruitful.
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`However, if the Court is inclined to have discovery on some or all of the 15 patents
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`asserted against TD Ameritrade proceed, TD Ameritrade requests that the parties meet and
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`confer on a proposed schedule and then submit either an agreed-upon schedule and/or competing
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`schedules for this Court’s consideration.
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`IV.
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`Potential Settlement Conference
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`TD Ameritrade would be amenable to participating in a settlement conference with Judge
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`Kendall or Judge Schenkier but believes that such a conference would be more fruitful if
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`conducted after the Court has issued a decision on Defendants’ Renewed Motion.
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`Dated: February 20, 2014
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`Respectfully submitted,
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`/s/ Natalie J. Morgan
`Michael Brett Levin
`Christopher P. Grewe
`Wilson Sonsini Goodrich & Rosati
`650 Page Mill Road
`Palo Alto, CA 94304
`(650) 493-9300
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`Case: 1:10-cv-00715 Document #: 528 Filed: 02/20/14 Page 7 of 8 PageID #:23139
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`Natalie J. Morgan
`Wilson Sonsini Goodrich & Rosati
`12235 El Camino Real, Suite 200
`San Diego, CA 92130
`(858) 350-2300
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`Attorneys for Defendants thinkorswim Group Inc.,
`TD Ameritrade, Inc., and TD Ameritrade Holding
`Corp.
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`Case: 1:10-cv-00715 Document #: 528 Filed: 02/20/14 Page 8 of 8 PageID #:23140
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`CERTIFICATE OF SERVICE
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`I hereby certify that on February 20, 2014, I electronically filed this POSITION
`STATEMENT OF THE TD AMERITRADE DEFENDANTS ON THE FEDERAL
`CIRCUIT'S DECISION IN OEC AND HOW THIS CASE SHOULD PROCEED with the
`Clerk of the Court using the CM/ECF system which will send notification of such filing to all
`counsel of record.
`
`/s/ Natalie J. Morgan
`Natalie J. Morgan
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